national arbitration forum

 

DECISION

 

Alticor Inc. v. sunshiguo

Claim Number: FA1111001417323

 

PARTIES

Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA.  Respondent is sunshiguo (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <027amway.com>, registered with Guangzhou Ming Yang Information Technology Co., Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2011; the National Arbitration Forum received payment on November 29, 2011.

 

On November 29, 2011, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <027amway.com> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the name.  Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@027amway.com.  Also on December 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <027amway.com> domain name is confusingly similar to Complainant’s AMWAY mark.

 

2.    Respondent does not have any rights or legitimate interests in the <027amway.com> domain name.

 

3.    Respondent registered and used the <027amway.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Alticor Inc., is the owner of several trademarks with the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (e.g., Reg. No. 707,656 registered November 29,1960). The mark is used by Complainant in connection with the distribution of hotel and real estate services, home living products, car care products, cosmetics, and a variety of other goods and services.

 

Respondent, sunshiguo, registered the disputed domain name on February 8, 2010. The disputed domain name resolves to a website which offers Complainant’s products for sale.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in the AMWAY mark. Panels consistently hold that the registration of a mark with a federal trademark authority is sufficient for a showing of rights in a mark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Complainant provides the Panel with proof of its multiple registrations with the USPTO for the AMWAY mark (e.g., Reg. No. 707,656 registered November 29,1960). Although Respondent resides in a country other than that which the AMWAY mark is registered, the Panel finds that the rights in a mark conferred by way of trademark registration are valid regardless of the location of the parties. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). The Panel therefore finds that Complainant has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that the <027amway.com> domain name is confusingly similar to Complainant’s AMWAY mark. The Panel finds that Respondent’s addition of the numbers “0,” “2,” and “7” fails to distinguish the disputed domain name from Complainant’s mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’  The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”). Additionally, the Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of a confusingly similar finding. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <027amway.com> domain name is confusingly similar to Complainant’s AMWAY mark in accordance with Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Where a complainant has made a prima facie case in support of the allegations it makes, the respondent bears the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the Respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this has been supported by Complainant by evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent, and thus may infer that Respondent does not have rights or legitimate interests in the <027amway.com> domain name. However, the Panel will review the record for information which suggests otherwise.

 

Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent has not been authorized to use the AMWAY mark in any way and thus that Respondent does not have rights or legitimate interests in the AMWAY mark. The WHOIS record for the <027amway.com> domain name lists “sunshiguo” as the domain name registrant. The Panel finds that the undisputed evidence available on the record shows adequately that Respondent is commonly known by the dispute domain name and thus the Panel finds that Respondent is not commonly known by the <027amway.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant argues that Respondent’s use of the disputed domain name fails to confer rights or legitimate interests in the <027amway.com> domain name on Respondent. Complainant argues that Respondent is using the <027amway.com> domain name to make unauthorized sales of Complainant’s goods. Panels have previously held that the sale of a complainant’s goods on a disputed domain name is not a protected use. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent’s use of the <027amway.com> domain name to sell Complainant’s products without Complainant’s authorization is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues also that Respondent’s bad faith is demonstrated by Respondent’s intent to register and use the <027amway.com> domain name in order to disrupt Complainant’s business. In both Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panels found that where a respondent sells the complainant’s products without the complainant’s permission bad faith is evident by the respondent’s intent to disrupt the complainant’s business. Complainant claims, and provides support for the claim, that Respondent is selling Complainant’s goods and services on the <027amway.com> domain name. Due to the fact that the disputed domain name is confusingly similar to Complainant’s AMWAY mark, the Panel finds that many Internet users will unintentionally purchase goods and services from Respondent instead of from Complainant, thus interrupting Complainant’s expected business flow. Therefore, the Panel finds that Respondent’s <027amway.com> domain name is disruptive to Complainant’s business done under the AMWAY mark pursuant to Policy ¶ 4(b)(iii).

 

Complainant lastly argues that the registration and use of the <027amway.com> domain name is a product of Respondent’s recognition of the potential posed for commercial gain by taking advantage of Internet users’ confusion as to the source, sponsorship, or affiliation of the <027amway.com> domain name. The combination of a confusingly similar domain name and the sale of Complainant’s products on that domain name’s resolving website is sure to make Internet users’ confused as to the <027amway.com> domain name’s connection, or lack thereof, to Complainant. Internet users’ presumptions that Complainant is the source of the <027amway.com> domain name will generally lead Internet users to purchase goods or services from Respondent’s <027amway.com> domain name and Respondent will commercially benefit. Therefore, the Panel finds that Respondent’s bad faith is evident due to its intent to cause confusion for its own commercial benefit as to the source, sponsorship, or affiliation of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON] products, Respondents have shown bad faith in use of the Domain Name.”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <027amway.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  January 13, 2012

 

 

 

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